Buc-ee's, Ltd. v. Bucks, Inc.

262 F. Supp. 3d 453
CourtDistrict Court, S.D. Texas
DecidedAugust 2, 2017
DocketCivil Action No. H-17-818
StatusPublished
Cited by8 cases

This text of 262 F. Supp. 3d 453 (Buc-ee's, Ltd. v. Bucks, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Buc-ee's, Ltd. v. Bucks, Inc., 262 F. Supp. 3d 453 (S.D. Tex. 2017).

Opinion

ORDER

DAVID HITTNER, United States District Judge

Pending before the Court is Defendants Bucks, Inc., BSD Bright Site Development LLC, and Nathan Richardson’s Motion to Dismiss Pursuant to Rules 12(b)(1), 12(b)(6), and, in the Alternative, Motion to Transfer Venue 'Pursuant to 28 U.S.C. § 1404(a) (Document No. 22). Having considered the motion, submissions, and applicable law, the Court determines the motion should be granted in part and denied in part.

I. BACKGROUND

This is a trademark infringement case. Plaintiff Buc-ee’s, LTD. (“Buc-ee’s”) owns and operates thirty-two convenience stores throughout Texas. Buc-ee’s owns the registered “BUC-EE’S” trademark. Defendant Bucks, Inc. (“Buck’s”) also owns and operates .convenience stores. Buck’s owns the registered “BUCKY’S” trademark. Defendant BSD Bright Site Development (“BSD”) allegedly works with Buck’s to find property for Buck’s to commercially develop.1 Defendant Nathan Richardson (“Richardson”) is a Buck’s employee. Defendant Tildón Sun Development, LLC (“Tildón”) is a Texas real estate holding company. Buc-ee’s alleges Defendants Buck’s, BSD, Richardson, and Tildón (collectively, the “Defendants”) jointly seek to operate convenience stores and gas stations in Texas using the BUCKY’S mark and that such activity infringes on the BUC-EE’S mark. The Defendants allege a prior settlement agreement resulting from previous trademark litigation between Buc-ee’s and Buck’s precludes Buc-ee’s from complaining of infringement in this case.

A. The 2008 Nebraska Litigation

On January 4, 2006, Buck’s filed an application to register the BUCKY’S mark with the United States Patent and Trademark Office (the “USPTO”). On April 3, 2006, Buc-ee’s filed an application to register the BUC-EE’S mark with the USPTO. On September 15, 2006, the USPTO. suspended the BUC-EE’S application pending the final disposition of the previously filed BUCKY’S application. As a result, on June 13, 2007, Buc-ee’s filed a notice of opposition against the BUCKY’S application with the Trademark Trial and Appeal Board. In response to Buc-ee’s"notice of opposition, on December 2, 2008, Buck’s filed a complaint against Buc-ee’s in the United States District Court for the District of Nebraska for unfair competition, violations of the Nebraska Uniform Deceptive Trade Practices Act, and declaratory relief (the “Nebraska Lawsuit”),' On September 16, 2009, Buck’s and Buc-ee’s entered into a co-existence agreement (the “Agreement”), settling the Nebraska Lawsuit. Subsequently, Buc-ee’s obtained registration of the BUC-EE’s mark and Buck’s of the BUCKY’S mark. The Agreement not only resolved the Nebraska Lawsuit, but also “memorializ[ed] [each par[457]*457ty’s] rights in and to their respective trademarks.”2

B. The Current Litigation

Buc-ee’s now alleges the Defendants are collectively purchasing property, seeking zoning approvals, appearing before zoning commissions, and obtaining licenses from the Texas Alcoholic Beverage Commission all in an effort to operate convenience stores and gas stations in Texas using the BUCKY’S mark. Based on these allegations, on March 14, 2017, Buc-ee’s filed a complaint in this Court against the Defendants under Texas law and the federal Lanhanv Act for trademark infringement, trademark dilution, unfair competition, false designation, and unjust enrichment; On May 5, 2017, Buck’s, BSD, and Richardson (collectively, the “Bucks Defendants”) moved to dismiss Buc-ee’s lawsuit pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6), or alternatively, to transfer the case to the District of Nebraska pursuant to 28 U.S.C. § 1404.

II. STANDARD OF REVIEW

A. Federal Rule of Civil Procedure mxv

Federal Rule of Civil Procedure 12(b)(1) requires that a court dismiss a claim if the court does not have subject matter jurisdiction over the dispute. Fed. R. Crv. P. 12(b)(1). A motion for lack of subject matter jurisdiction under Rule 12(b)(1) must be considered before any motion on the merits because subject matter jurisdiction is required to determine the validity of any claim. Moran v. Kingdom of Saudi Arabia, 27 F.3d 169, 172 (6th Cir. 1994). “Lack of subject matter jurisdiction .may be found in any one of three instances: (1) the complaint alone; (2) the complaint supplemented by undisputed facts evidenced in the record; or (3) the complaint supplemented by undisputed facts plus the court’s resolution of disputed facts.” Ramming v. United States, 281 F.3d 158, 161 (5th Cir. 2001) (per curiam). “The burden of proof for a Rule 12(b)(1) motion to dismiss is on the party asserting jurisdiction.” Id. Unlike a court considering a Rule 12(b)(6) or Rule 56 motion, district courts have a “unique power ... to make factual findings which are decisive of [subject matter] jurisdiction” when considering a motion under Rule 12(b)(1) that raises questions of fact relevant to subject matter jurisdiction. Williamson v. Tucker, 645 F.2d 404, 412-13 (5th Cir. 1981).

B. Federal Rule of Civil Procedure 12(b)(6)

Rule 12(b)(6) allows dismissal if a plaintiff fails “to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). Under Rule 8(a)(2), a pleading must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). Although “the pleading standard Rule 8 announces does not require ‘detailed factual allegations,’ ... it demands more than ... ‘labels and conclusions.’” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). “ ‘[A] formulaic recitation of the elements of a cause of action will not do.’ ” Id. (quoting Twombly, 550 U.S. at 555, 127 S.Ct. 1955). In deciding a Rule 12(b)(6) motion to dismiss for failure to state a claim, “[t]he ‘court accepts all well-pleaded facts as true, viewing them in the light most favorable to the plaintiff.’” In re Katrina Canal Breaches Litig., 495 F,3d 191, 205 (5th Cir. 2007) [458]*458(quoting Martin K. Eby Constr. Co. v.

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